Watts Water Technologies Inc. v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)
Claim Number: FA1606001681402
Complainant is Watts Water Technologies Inc. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wattsi.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically June 27, 2016; the Forum received payment June 27, 2016.
On June 28, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <wattsi.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited verified that Respondent is bound by the HiChina Zhicheng Technology Limited registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2016, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wattsi.com. Also on July 6, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
August 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions in this Proceeding:
Complainant is an international manufacturer of innovative water solutions for the plumbing and heating, and water quality markets, and is traded on the New York Stock Exchange (NYSE). Complainant registered the WATTS mark with the China State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 856,788, registered July 21, 1996), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. A. The <wattsi.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates the WATTS mark and merely adds the letter “i” and the generic top-level domain (“gTLD” ) “.com.”
Respondent has no rights or legitimate interests in the domain. Complainant urges that Respondent is not commonly known by the domain and Complainant has not given Respondent permission to use the WATTS mark in any manner. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses its domain to sell products that compete directly with Complainant’s business. See Compl., at Attached Ex. C.
Respondent registered and is using the domain in bad faith. First, Respondent has a history of adverse UDRP rulings against it. See Compl., at Attached Ex. J. Second, Respondent’s use of the domain to sell competing products is evidence of bad faith. Third, Respondent engaged in bad faith pursuant to Policy ¶ 4(b)(iv) through its use of its domain to sell products that directly compete with Complainant. Fourth, Respondent failed to respond to Complainant’s three cease and desist letters. See Compl., at Attached Ex. H. Finally, because of the fame associated with Complainant’s WATTS mark, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and rights therein, however actual notice is required to support findings of bad faith and the Panel will review the file to determine if there is sufficient evidence to support a finding of actual notice.
Respondent’s Contentions in this Proceeding:
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the domain June 25, 2010.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. The Panel finds as follows:
After review of the file and relevant Rules, and Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Respondent has no such rights or legitimate interests in Complainant’s protected mark or the disputed domain name that contains it.
Respondent registered the disputed domain name with full knowledge of Complainant’s rights in its mark and registered and used a confusingly similar domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant is an international manufacturer of innovative water solutions for the plumbing and heating, and water quality markets, and is traded on the NYSE. Complainant registered the WATTS mark with the SAIC (e.g., Reg. No. 856,788, registered July 21, 1996), which Complainant contends demonstrates its rights in the mark. See Compl., at Attached Ex. A. The Panel finds that trademark registrations with the SAIC demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant demonstrated rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <wattsi.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates the WATTS mark and merely adds the letter “i” and the gTLD “.com.” Neither addition of a letter nor affixation of the “.com” gTLD, to a complainant’s mark sufficiently differentiates a respondent’s domain from a complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the domain. Complainant contends Respondent is not commonly known by the domain and that Complainant has not given Respondent permission to use the WATTS mark in any manner. The Panel notes that the WHOIS information merely lists “YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)” as registrant and that Respondent failed to provide any evidence for the Panel’s consideration. Attached Exhibit B shows additional WHOIS information. Based on these considerations and the absence of evidence to support such a contrary finding, the Panel finds no basis exists in this record to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant alleges that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent uses its domain to sell products that compete directly with Complainant’s business. See Compl., at Attached Ex. C. A respondent does not show rights or legitimate interests where it uses a domain to sell products that are directly competitive with a complainant’s business. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent has a history of adverse UDRP rulings against it. Complainant cites the following cases in support: The Dow Chemical Company and El du pont de Nemours and Company v. BAILI INVESTMENT CO., LTD / YinSi BaoHu Yi KaiQu (Hidden by Whois Privacy Protection Service) and SHANGHAI DOWDUPONT INTERNATIONAL TRADE LIMITED / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), D2016-0427 (WIPO June 9, 2016), and Credit Agricole S.A. v. zhangwei/YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service ), D2016-0555 (WIPO May 19, 2016). See Compl., at Attached Ex. J. A respondent’s history of adverse UDRP rulings is evidence of bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent registered and is using the domain in bad faith per Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s use of the domain to sell competing products is evidence of bad faith. Panels have held that a respondent’s use of a domain to sell competing products constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent engaged in bad faith pursuant to Policy ¶ 4(b)(iv) through its use of its domain to sell products that are directly competitive with Complainant. A respondent’s use of a domain to sell products that are directly competitive with a complainant’s business is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) and the cases. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). For this reason, the Panel finds that Respondent registered and is using the domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent failed to respond to Complainant’s three cease and desist letters. See Compl., at Attached Ex. H. Panels have decided that a respondent’s failure to respond to a complainant’s demand letter(s) can be evidence of bad faith. See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”). Accordingly, the Panel finds that Respondent engaged in bad faith.
Finally, Complainant argues that because of the fame associated with the WATTS mark, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark. While panels have decided that constructive notice is not sufficient for a finding of bad faith, panels have found, and this Panel so finds, that Respondent’s use of Complainant’s mark to compete in the same commercial area where Complainant is active permits the Panel to find that Respondent had actual knowledge of Complainant’s rights in its mark and, therefore, registered the domain in bad faith under Policy ¶ 4(a)(iii). Thus, the Panel finds that Respondent registered the domain with actual knowledge of Complainant’s mark. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wattsi.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 17, 2016.
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